In 2010, the European Union Intellectual Property Office (EUIPO) registered the design of a Lego brick as a so-called design patent at Lego’s request. This is not trademark, copyright or patent protection, but protection of a specific design. In this case, the design with the number 001664368-0006. It shows a rectangular brick element with four studs on the surface, which is used in many Lego sets.

Invalidity application for Lego design begins legal dispute

In 2016, a German company applied to the EUIPO for the corresponding design to be declared invalid. The company based its application on the fact that the design of the Lego brick could not be protected as a Community design as it only fulfilled a technical function.

The EUIPO initially rejected the application. Following an objection, the Office then granted the application in a decision and declared the design invalid. This was because the rectangular shape of the brick and the studs on its surface were primarily intended to make it easier to fit the Lego bricks together. The design of this Lego brick was therefore exclusively technical.

Lego took legal action against the EUIPO’s decision

Lego did not want to accept this decision and took the matter to the General Court of the European Union (EGC) in Luxembourg. Although the odds initially looked bad for the Danish toy manufacturer, the General Court has now ruled (Case T-515/19) that the Board of Appeal of the EUIPO, which had initiated the declaration of invalidity of the design, had committed an error of law.

The reason for this is an exception in the corresponding design regulation: If the protected product, in this case the Lego brick, serves the purpose of enabling the assembly or connection of a large number of interchangeable products within a modular system, protection as a design is also possible if the design is exclusively technical. According to the Luxembourg judges, the EUIPO should have examined whether the building block fulfilled these requirements. Furthermore, not all of the appearance features of the module had been sufficiently established.

EUIPO must decide again on Lego designs

The EGC therefore declared the declaration of invalidity unlawful, but did not expressly confirm the protectability of the brick. In the ECJ’s view, the EUIPO’s examination was not incorrect in terms of content, but merely incomplete. Nevertheless, the decision of the EGC means that the design registration in favor of Lego remains in place for the time being. The EUIPO must now decide on the matter again. The path to the ECJ is also still open.

The last word in the matter is therefore far from being spoken. Nevertheless, Lego has won an important interim victory in this case – especially against the much cheaper competition. However, they are already mobilizing elsewhere. Various new nullity applications against further Lego designs have already been announced.